DETAILED ACTION
Notice of Pre-AIA or AIA Status
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Applicant’s arguments, filed 19 December 2025, have been fully considered. Rejections and/or objections not reiterated from previous office actions are hereby withdrawn. The following rejections and/or objections are either reiterated or newly applied. They constitute the complete set presently being applied to the instant application.
Claim Rejections - 35 USC § 103 (maintained)
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
Claims 1-2, 7-10, 15, 18-20 and 22 are rejected under 35 U.S.C. 103 as being unpatentable over Sakamoto et al. (US 2024/0059620 A1, 02/22/2024, priority 10/02/2020) (hereinafter Sakamoto).
Sakamoto discloses dental ceramic coloring solution comprising erbium (Er) and cobalt (Co) that is able to impart needed pink shade while reducing a decrease in the strength of a dental ceramic (abs) pre-sintered/unfired body ([0093]) including those containing zirconia ([0092]). The coloring solution can be suitably used for prostheses that include a gingival part ([0129]). The Er is preferably in amounts of 110-310 mmol/L ([0040]) and may be erbium nitrate ([0039]). The Co is preferably 0.034-1.7 mmol/L ([0046]). The solution further comprises an aluminum (Al) component to improve the strength of zirconia ([0047]) preferably in amounts of 0.1-40 mmol/L ([0051]). The coloring solution may comprise other metallic components ([0052]) additives ([0078]), and a solvent comprising water and/or an organic solvent ([0056]). The content of each coloring component can be appropriately adjusted, including to obtain the desired color intensity after sintering ([0094], [0112]). A dental ceramic after coloring and sintering has chromacity (L*,a*,b*) with a* of preferably 4.5-15, b* preferably -5.0-10, and L* preferably 65-95 ([0091]).
The prior art is not anticipatory insofar as this combination must be selected from various lists/locations in the reference. It would have been obvious, however, to make the combination since all the claimed elements were known in the prior art and one skilled in the art could have combined the elements as claimed by known methods with no change in their respective functions, and the combination yielded nothing more than predictable results to one of ordinary skill in the art. See MPEP § 2143 (I)(A).
Regarding claims 1, 8, 10 and 13 reciting amounts of erbium, cobalt or aluminum, it would have been obvious to one of ordinary skill in the art to have selected an amount of erbium, cobalt or aluminum from the disclosed range of 110-310 mmol/L, 0.034-1.7 mmol/L, and 0.1-40 mmol/L, respectively, which appears to overlap the instantly claimed amounts in % by weight. In the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists. See MPEP § 2144.05(I). Moreover, in any case, the selection of appropriate weight percentages would appear to require no more than routine testing on the part of the skilled artisan, and so alternatively it would have been obvious to determine workable ranges to arrive at the claimed amounts in weight percentages. "[W]here the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation." See MPEP § 2144.05(II)(A).
Regarding claim 19 and 22, as discussed above, Sakamoto discloses wherein a dental ceramic after coloring and sintering has chromacity (L*,a*,b*) with a* of preferably 4.5-15, b* preferably -5.0-10, and L* preferably 65-95 ([0091]). Accordingly, it would have been obvious to one of ordinary skill in the art to have selected values of L*, a*, and b* from the disclosed ranges, such that the differences between the chromacity values (L*, a*, b*) of Sakamoto and those recited (i.e. L* of 53, a* of 20, and b* of 10), calculated using the formulas of pages 15-16 of the instant Specification, appear to overlap with the claimed ΔE and Δa ranges (i.e. ≤ 25 and ≤ 15, respectively), thus making them obvious. In the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists. See MPEP § 2144.05(I).
Similarly, regarding claim 20, it would have been obvious to one of ordinary skill in the art to have selected a chromacity value of a dental ceramic after sintering, such that the values selected would have equated to an increase in “a*” value in the L*a*b* color scale that overlaps with the claimed increase in “a*” value, thus making the claimed increase in “a*” value obvious. In the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists. See MPEP § 2144.05(I).
Response to Arguments
Applicant mainly asserts Sakamoto fails to teach or disclose all of the limitations of claims 1 and 15 because Sakamoto would not meet the minimum amount of erbium and cobalt as instantly claimed under Applicant’s assumed conditions of: ethanol as solvent; Er as erbium chloride hydrate; Co as cobalt(II) fluoride hydrate; and max Co and Er wt. % to consider minimum amount of salt needed to achieve Er and Co minimum.
The Examiner does not find the Applicant’s assertion to be persuasive. The teachings of Sakamoto is not limited to Applicant’s assumed conditions. As supported by MPEP 2123, a prior art reference is evaluated for all that it would have reasonably suggested to one having ordinary skill in the art, and is not limited to preferred embodiments and working examples. In this instant case, Sakamoto does not limit the amount of Er to the Applicant’s asserted amounts. As discussed above, Sakamoto discloses in paras. [0094] and [0112] that the content of the coloring components (i.e. Er component and Co component) can be appropriately adjusted by adjusting the applied amount of a coloring solution; and in para. [0046] that amounts above the preferred range is permissible. Therefore, as discussed in the rejection above, the selection of amounts of erbium and cobalt appear to require no more than routine testing on the part of the skilled artisan, and so it would have been obvious to determine workable ranges to arrive at the claimed amounts in weight percentages. "[W]here the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation." See MPEP § 2144.05(II)(A). As such, Applicant’s assertion is unpersuasive.
Applicant mainly asserts amended none of Sakamoto’s 17 examples fall within the recited ranges of claims 19 and 22 as amended.
The Examiner disagrees. As discussed above, a prior art reference is evaluated for all that it would have reasonably suggested to one having ordinary skill in the art, and is not limited to preferred embodiments and working examples. See MPEP 2123. Therefore, the teachings of Sakamoto is not limited to its working examples. As discussed in the rejection above, Sakamoto discloses in para. [0091] wherein a dental ceramic after coloring and sintering may have chromacity (L*,a*,b*) values including: a* of preferably 4.5-15; b* preferably -5.0-10; and L* preferably 65-95. Accordingly, Accordingly, it would have been obvious to one of ordinary skill in the art to have selected values of L*, a*, and b* from the disclosed ranges, such that the differences between the chromacity values (L*, a*, b*) of Sakamoto and those recited (i.e. L* of 53, a* of 20, and b* of 10), calculated using the formulas of pages 15-16 of the instant Specification, appear to overlap with the claimed ΔE and Δa ranges (i.e. ≤ 25 and ≤ 15, respectively), thus making them obvious. In the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists. See MPEP § 2144.05(I). As such, Applicant’s assertion is unpersuasive.
Claims 3-6, 11-14, 16-17, and 21 are rejected under 35 U.S.C. 103 as being unpatentable over Sakamoto et al. (US 2024/0059620 A1, 02/22/2024, priority 10/02/2020) (hereinafter Sakamoto) in view of Tang et al. (CN 108530106 A, 09/14/2018) (hereinafter Tang).
The disclosure of Sakamoto is discussed in detail above, and does not explicitly disclose wherein the coloring solution comprises zinc (claim 3), neodymium (claim 4), or nickel (claim 6).
However, Tang discloses a kind of color liquid for zirconium oxide artificial tooth ceramic body (p.1, last ¶) suitable for impregnating or brushing onto pre-sintered green body (p.2, ¶1), comprising colorants and inorganic additives including neodymium, nickel, and Zn (zinc) (p.2, ¶9-11).
Sakamoto discloses wherein the coloring solution may comprise other additives and metallic components. Accordingly, it would have been obvious to one of ordinary skill in the art to have included neodymium, nickel, and/or zinc in the coloring solution of Sakamoto, since these are known and effective metals and additives suitable for zirconium artificial tooth ceramic body as taught by Tang.
Regarding claims 11, 12, 14, and 16 reciting amounts of zinc, neodymium, and/or nickel, it would have taken no more than the relative skills of one of ordinary skill in the art to have arrived at the claimed amounts of zinc, neodymium, and/or nickel through routine experimentation based on the level of additional metals desired in the coloring solution. "[W]here the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation." See MPEP § 2144.05(II)(A).
Moreover, regarding claim 17, since Sakamoto does not require additional coloring components, it would have been obvious to one of ordinary skill in the art that the coloring components would only include erbium, cobalt, aluminum, neodymium, nickel, and zinc as taught by the combination of Sakamoto and Tang.
Regarding claim 21, Sakamoto further discloses the pink shade needed for dental use can be imparted after firing (i.e. claimed sintering then staining) ([0095]). As discussed above, Sakamoto discloses wherein the content of each coloring component can be appropriately adjusted to obtain the desired color intensity after sintering. Accordingly, it would have taken no more than the relative skills of one of ordinary skill in the art to have arrived at the claimed number of staining cycles after sintering through routine experimentation based on the level of color intensity desired. "[W]here the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation." See MPEP § 2144.05(II)(A).
Response to Arguments
Applicant mainly argues Tang does not cure the deficiencies of Sakamoto, since Tang does not describe methods for applying a liquid pre-coloring solution to a gum section of a zirconia dental prosthesis or reducing the number of staining cycles needed to manufacture a zirconia prosthesis with a gum tissue section.
The Examiner does not find the argument persuasive. As this is a 103 obviousness rejection, no one piece of prior art is required to teach each and every claim limitation. See MPEP § 2141(III). In this instant case, Sakamoto discloses a zirconia dental ceramic coloring solution, and Tang discloses that metals and additives including neodymium, nickel, and zinc suitable for zirconia dental ceramics. Generally, it is prima facie obvious to select a known material for incorporation into a composition, based on its recognized suitability for its intended use. See MPEP § 2144.07. As such, Applicant’s argument is unpersuasive.
Citation of Pertinent Prior Art
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
Fecher et al. (US 2022/0183804 A1, 06/16/2022) discloses a pink colored pre-sintered blank for use for the production of a denture containing 2-25 wt. % erbium oxide.
Sakamoto et al. (US 2023/0380944 A1, 11/30/2023, priority 10/02/2020) discloses dental coloring solution imparting a desired shade comprising erbium.
Kim et al. (US 2023/0084657 A1, 03/16/2023, priority 10/27/2020) discloses a zirconium oxide ceramic containing a colorant comprising erbium.
Park et al. (KR 102367012 B1, 02/23/2022) discloses coloring the surface of dental implants to develop the same color as the gum in the corresponding area using colorants including erbium.
Ushio et al. (US 2025/0195338 A1, 06/19/2025, priority 02/18/2022) discloses a zirconia layered body comprising erbium.
Conclusion
THIS ACTION IS MADE FINAL. Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to LUCY TIEN whose telephone number is (571)272-8267. The examiner can normally be reached Monday - Thursday 8:30 AM - 6:30 PM EST.
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/LUCY M TIEN/Examiner, Art Unit 1612
/SAHANA S KAUP/Supervisory Primary Examiner, Art Unit 1612